Elvis sighted at Australian Trade Marks Office
In the recently published decision Elvis Presley Enterprises Inc v Elvis Jelcic [2008] ATMO 103, a Delegate of the Australian Trade Marks Office has allowed the trade mark ‘ElvisFINANCE’ covering financial services in Class 36 to proceed to registration despite opposition from Elvis Presley Enterprises.
Jelcic established his mortgage brokerage, ElvisFINANCE, in 2004 and claims to have spent substantial costs since that time setting up the business. On the other hand, as far as we are aware, Elvis Presley Enterprises has never offered home loans or any type of financial services, although The King was known among his entourage for automotive finance.
The main ground of opposition sought to be established by the Opponent was under section 43 of the Trade Marks Act 1995 which requires that because of some “connotation ...the trade mark…has,…or would be likely to deceive or cause confusion”. The main gist of the Opponent’s argument was that commercial use of such a famous person as Elvis Presley would be regarded as an endorsement and would deceive or cause confusion on this basis. The Delegate accepted that use of the word ‘Elvis’ may cause come people to think of the singer.
However, the Delegate quoted Kenny J in an earlier Federal Court case as saying “the question is whether, because of this connotation, the respondent’s mark is likely to deceive or cause confusion”. On the evidence the Delegate did not find such a connection between Elvis Presley and mortgage lending and home loans. The Delegate said that it would require something more such as embellishing the mark with a guitar to cause a likelihood of deception or confusion.
The Delegate also noted that opposition under the ground that use of the trade mark would be contrary to law (section 42 Trade Marks Act 1995) had not been established because he did not consider that the Applicant’s behaviour had contravened any laws regarding misleading and deceptive conduct.
When first contacted by solicitors for Elvis Presley Enterprises Jelcic’s reaction was “…I thought, it’s my natural name, so why should I change it?” Why, indeed.
According to CNN, Elvis (that's Presley, not Jelcic) topped the Forbes magazine's list of Top-Earning Dead Celebrities, hauling in (US)$52million last year" so he is good for a loan. However, I imagine that this is not a list anyone on it cares to be on, and even had The King not made the 1977 career move, he would now be 74, retired and an unlikely mortgage broker, so the decision is not unreasonable.
